Preparing for the AIA’s Foreign Filing Aftershock

by Matthew Sekac

US patent practitioners will no doubt be remembering the frenzied weeks leading up to March 16, 2013 for a long time to come. With the new provisions of the America Invents Act (“AIA”) set to go into effect on that date, patent applicants and their legal representatives rushed to get as many patent applications on file as they could under the “old rules.” The resulting spike was captured visually by the USPTO in this striking chart (via www.ip-watch.org):

From Intellectual Property Watch’s useful article on the spike: Patent Office estimates of filings made between March 19, 2012 and March 19, 2013, generally show a trend of roughly 1,000 to 2,000 non-provisional patent applications and less than 1,000 provisional applications filed each day, with a large peak of 14,000 non-provisional and provisional applications filed each day leading up to March 16, 2013. Based on differences between filing serial numbers, we saw a difference of 30,000 application numbers between applications filed on March 13 and March 14, 2013. We expect that there have been hundreds of thousands of patent applications filed in the weeks leading up to the change of the law.

From our perspective at Park IP, the scramble to draft and file all those patent applications last year was something we mostly observed rather than felt ourselves. We were frequently hearing from our US clients about intense, stressful days that bled into intense, sleepless nights. Now our turn to play a part in this flurry of activity is fast approaching, and we’re gearing up for an exciting (and challenging) 18 months.

The foreign filing clock starts ticking the day the priority application is filed. That “priority date,” in turn, dictates the deadlines for filing the application in international jurisdictions worldwide. For most applications the first key date on the calendar is 12 months from the priority date. At that stage, many applicants will file an international PCT (Patent Cooperation Treaty) Application, which extends priority in PCT Member States for an additional 18 months , while also providing applicants with search data and a preliminary examination.

Applicants planning to seek protection in countries not party to the Patent Cooperation Treaty will also need to file direct national applications under the Paris Convention. Jurisdictions such as Argentina, Venezuela, the Gulf Cooperation Council, and Taiwan fall into this category. Some applicants also elect to skip the PCT International Phase and file directly in countries like China which are more frequently targeted during PCT National Phase.

The 12-month date, then, is where Park IP first comes in: we provide the translations and coordinate the filings of applications in jurisdictions such as Argentina and the GCC. This also means that the next few weeks represent our first taste of the flurry in activity from last year, as the spike in US priority filings begets a corresponding spike in applications approaching their 12-month deadline, and a spike in the number of applications requiring translation into Spanish, Arabic, and Traditional Chinese.

But what we’re seeing now will pale in comparison to the flood of applications approaching their 30-month deadlines for PCT National Phase Entry in September 2015. This is the point at which most applicants face the deadline for filing their applications in some of the world’s most important markets, including Japan, China, South Korea, Brazil, Mexico, and Russia. There are many more applications filed in each of these countries than in any of the “Non-PCT” jurisdictions mentioned above; this is the stage where the biggest part of the AIA’s foreign filing “aftershock” will be felt.

For Park IP, the approaching surge of National Phase Entries represents both an opportunity and a challenge. We will be taking steps to further strengthen our global production infrastructure and prepare our resource network to accommodate the spike in volume. We’ll also be gearing up for some sleepless nights of our own.

While we’re doing our part, we would also advise applicants and their legal counsel to be mindful of these circumstances and consider making preparations of their own. Patent translation is a labor intensive process, and patent translators are a scarce and valuable resource. Applicants may want to consider how to expedite the internal processes by which foreign filing decisions and coverage strategies are determined, so that instructions can be provided as far in advance as possible.

The spike in translation requests worldwide may create a strain on the best available resources and require some providers to go deeper and deeper into their roster of translators to accommodate the demand. Applicants can play a meaningful role in improving the quality of translations they receive by getting their providers started sooner rather than later.